Paper No.: ____
`Filed: March 3, 2015
`
`
`Filed on behalf of: Tristar Products, Inc.
`By:
`Noam J. Kritzer
`Email: nkritzer@bakoskritzer.com
`Ryan S. McPhee
`Email: rmcphee@bakoskritzer.com
`BAKOS & KRITZER
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
`
`TRISTAR PRODUCTS, INC.
`Petitioner
`
`v.
`
`CHOON’S DESIGN INC.
`Patent Owner
`_________________________
`
`Patent No. 8,622,441
`_________________________
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,622,441
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,622,441
`
`
`TABLE OF CONTENTS
`
`B. 
`
`V. 
`
`I.  MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1) .......................... 1 
`A. 
`REAL PARTY-IN-INTEREST UNDER 37 C.F.R. § 42.8(b)(1) .............. 1 
`B. 
`RELATED MATTERS UNDER 37 C.F.R. § 42.8(b)(2) .......................... 1 
`C. 
`LEAD AND BACK-UP COUNSEL .......................................................... 3 
`D. 
`SERVICE INFORMATION ...................................................................... 3 
`PAYMENT OF FEES – 37 C.F.R. § 42.103 ................................................... 4 
`II. 
`III.  REQUIREMENTS FOR INTER PARTES REVIEW UNDER
`37 C.F.R. § 42.104 ........................................................................................... 4 
`A.  Grounds for Standing Under 37 C.F.R. § 42.104(a) .................................. 4 
`Identification of Challenge Under 37 C.F.R. § 42.104(b)
`B. 
`and Relief Requested .................................................................................. 4 
`1.  Effective Filing Date ......................................................................... 5 
`2.  Claim Construction Under 37 C.F.R. § 42.104(b)(3) ....................... 9 
`IV.  SUMMARY OF THE ‘441 PATENT ........................................................... 13 
`A. 
`BRIEF DESCRIPTION ............................................................................ 13 
`1.  The ‘441 Patent Specification ......................................................... 13 
`SUMMARY OF THE PROSECUTION HISTORY
`OF THE ‘441 PATENT ............................................................................ 14 
`THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ‘441 PATENT IS UNPATENTABLE ............................. 14 
`A.  GROUND I: CLAIMS 1, 2, AND 5 ARE ANTICIPATED BY
`ZALTZMAN ............................................................................................ 14 
`1.  Claim 1 is Anticipated by Zaltzman ............................................... 15 
`2.  Claim 2 is Anticipated by Zaltzman ............................................... 16 
`3.  Claim 5 is Anticipated by Zaltzman ............................................... 16 
`B.  GROUND II: CLAIMS 11, 12, 15, AND 16 ARE OBVIOUS IN VIEW
`OF ZALTZMAN ...................................................................................... 17 
`1.  Claim 11 is Obvious Over Zaltzman in View of Phelps ................ 17 
`2.  Claim 11 is Obvious Over Zaltzman in View of Norris ................. 23 
`3.  Claim 11 is Obvious Over Zaltzman in View of Linstead ............. 24 
`4.  Claim 12 is Obvious Over Zaltzman in View of
`Phelps or Norris .............................................................................. 25 
`5.  Claim 15 is Obvious Over Zaltzman in View of
`Carruth or Meltzer .......................................................................... 25 
`6.  Claim 16 is Obvious Over Zaltzman in View of
`Carruth or Meltzer .......................................................................... 26 
`C.  GROUND III: CLAIMS 1, 2, AND 5 ARE
`ANTICIPATED BY LIJOVICH .............................................................. 28 
`
`
`
`ii
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,622,441
`
`
`1.  Claim 1 is Anticipated by Lijovich ................................................. 28 
`2.  Claim 2 is Anticipated by Lijovich ................................................. 33 
`3.  Claim 5 is Anticipated by Lijovich ................................................. 34 
`D.  GROUND IV: CLAIMS 11, 12, 15, AND 16 ARE OBVIOUS
`IN VIEW OF LIJOVICH ......................................................................... 35 
`1.  Claim 11 is Obvious Under 35 U.S.C. 103(a) in View of
`Lijovich and Phelps ........................................................................ 35 
`1.  Claim 11 is Obvious Under 35 U.S.C. 103(a) in View of
`Lijovich and Norris ........................................................................ 38 
`2.  Claim 11 is Obvious Under 35 U.S.C. 103(a) in View of
`Lijovich and Linstead ..................................................................... 39 
`3.  Claim 12 is Obvious Under 35 U.S.C. 103(a) in View of
`Lijovich and Phelps ........................................................................ 40 
`4.  Claim 15 is Obvious Under 35 U.S.C. 103(a) in View of
`Lijovich and Phelps ........................................................................ 41 
`5.  Claim 16 is Obvious Under 35 U.S.C. 103(a) in View of
`Lijovich and Phelps and Carruth or Meltzer .................................. 43 
`GROUND V: CLAIMS 1, 2, AND 5 ARE
`ANTICIPATED BY NEDRY .................................................................. 44 
`1.  Claim 1 is Anticipated by Nedry .................................................... 44 
`2.  Claim 2 is Anticipated by Nedry .................................................... 49 
`3.  Claim 5 is Anticipated by Nedry .................................................... 50 
`GROUND VI: CLAIMS 11, 12, 15, AND 16 ARE OBVIOUS
`IN VIEW OF NEDRY AND PHELPS .................................................... 51 
`1.  Claim 11 is Obvious in View of Nedry and Phelps ........................ 51 
`2.  Claim 12 is Obvious in View of Nedry and Phelps ........................ 55 
`3.  Claim 15 is Obvious in View of Nedry and Phelps ........................ 56 
`4.  Claim 16 is Obvious in View of Nedry and Phelps ........................ 58 
`VI.  CONCLUSION .............................................................................................. 60 
`
`
`E. 
`
`F. 
`
`
`
`
`
`
`
`iii
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`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,622,441
`
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Bettcher Indus., Inc. v. Bunzl USA, Inc.,
`
`Page(s)
`
`661 F.3d 629 (Fed. Cir. 2011) ...................................................................... 10, 12
`
`Clio USA, Inc. v. The Procter and Gamble Co.,
`
`IPR2013-00438 (PTAB) ....................................................................................... 3
`
`Graves v. Principi,
`
`294 F.3d 1350 (Fed. Cir. 2002) ............................................................................ 2
`
`In re Seversky,
`
`474 F.2d 671 (CCPA 1973) .................................................................................. 8
`
`Invue Security Prods. V. Merchandising Techs., Inc.,
`
`IPR2013-00122 (PTAB) ....................................................................................... 2
`
`Nautique Boat Co., Inc. v. Malibu Boats, LLC,
`
`IPR2014-01045 (PTAB) ....................................................................................... 2
`
`Statutes
`
`
`
`35 U.S.C. § 102 .................................................................................................passim
`
`35 U.S.C. § 103 .................................................................................................passim
`
`35 U.S.C. § 311 et seq.. .....................................................................................passim
`
`Regulations
`
`
`
`37 C.F.R. § 42.1 et seq. .....................................................................................passim
`
`
`
`iv
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,622,441
`
`
`EXHIBITS
`
`Ex. 1001 U.S. Patent No. 8,622,441
`
`Ex. 1002
`
`File History of U.S. Patent No. 8,622,441
`
`Ex. 1003
`
`File History of U.S. Provisional Application No. 61/846,270
`
`Ex. 1004
`
`File History of U.S. Patent Application No. 13/626,057
`
`Ex. 1005 Certificate of Service in the 10848 Litigation
`
`Ex. 1006
`
`Stipulated Order of Dismissal Without Prejudice in the 01254
`
`Litigation
`
`Ex. 1007 Rules of Practice, 77 Fed. Reg. No. 157
`
`Ex. 1008 Carruth et al. U.S. Patent No. 8,418,434 (“Carruth”)
`
`Ex. 1009 Meltzer U.S. Patent No. 5,426,788 (“Meltzer”)
`
`Ex. 1010
`
`Linstead U.S. Patent No. 3,438,223 (“Linstead”)
`
`Ex. 1011 Yates U.S. Patent No. 2,274,572 (“Yates”)
`
`Ex. 1012
`
`Zaltzman U.S. Patent No. 4,023,245 (“Zaltzman”)
`
`Ex. 1013 Nedry U.S. Patent Publication No. 2014/0373966 (“Nedry”)
`
`Ex. 1014 Nedry Provisional 61/838,952
`
`Ex. 1015 Norris, Kathy. I Can’t Believe I’m Loom Knitting! (Little Rock, AR:
`
`Leisure Arts, Inc. 2010) (“Norris”)
`
`Ex. 1016
`
`Phelps, Isela. Looming Knitting Primer (New York: St. Martin’s
`
`Griffin 2007) (“Phelps”)
`
`
`
`v
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,622,441
`
`Ex. 1017
`
`Lijovich. Basic Instructions for Using a Double Lucet (January 2002,
`
`revised June 2002) (“Lijovich”)
`
`Ex. 1018
`
`The Horde of Vigdis (Aug. 5. 2011) (“Vigdis”)
`
`Ex. 1019 Declaration of Youjiang Wang, Ph.D., P.E.
`
`Ex. 1020 Declaration of Woli I. Urbe, Esq.
`
`
`
`
`
`vi
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,622,441
`
`Pursuant to 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42, Tristar Products, Inc.
`
`(“Petitioner”) respectfully petitions for Inter Partes Review (IPR) of claims 1, 2, 5,
`
`11, 12, 15, and 16 of U.S. Patent No. 8,622,441 (“the ‘441 Patent”), which was filed
`
`on September 5, 2013 and issued on January 7, 2014, to Choon’s Design LLC, and
`
`is currently assigned to Choon’s Design Inc. (“Patent Owner”) according to the
`
`United States Patent and Trademark Office assignment records.
`
`I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1)
`A. REAL PARTY-IN-INTEREST UNDER 37 C.F.R. § 42.8(b)(1)
`Petitioner Tristar Products, Inc. is the real party-in-interest for the instant
`
`petition.
`
`B. RELATED MATTERS UNDER 37 C.F.R. § 42.8(b)(2)
`The ‘441 Patent is asserted by the Patent Owner in the following litigations
`
`pending in the United States District Court for the Eastern District of Michigan:
`
`Choon’s Design Inc. v. NGS iCommerce Enters. Corp., filed February 24, 2014
`
`(2:14-cv-10847); Choon’s Design Inc. v. Tristar Products, Inc., filed February 24,
`
`2014 (2:14-cv-10848) (“the 10848 Litigation”); Choon’s Design Inc. v. Quality
`
`Innovations Inc., filed March 14, 2014 (2:14-cv-11102); and Choon’s Design Inc. v.
`
`Optari LLC, filed August 21, 2014 (4:14-cv-13242). Petitioner is the named
`
`defendant in the Choon 10848 Litigation. The earliest that Petitioner was served
`
`1
`
`was March 4, 2014. Ex. 1005.
`
`
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,622,441
`
`The ‘441 Patent was the subject of a complaint by Petitioner for declaratory
`
`judgment filed in the United States District Court for the District of New Jersey in
`
`Tristar Products, Inc. v. Choon’s Design LLC, filed February 25, 2014 (2:14-cv-
`
`01254) (“the ‘01254 Litigation”). Petitioner and Patent Owner stipulated to a
`
`dismissal of the ‘01254 Litigation on September 8, 2014, and the ‘01254 Litigation
`
`was dismissed without prejudice on September 9, 2014. Ex. 1006.
`
`Although the ‘01254 Litigation was a civil action challenging the validity of
`
`the ‘441 Patent, the ‘01254 Litigation is not a bar to this petition under 35 U.S.C. §
`
`315(a)(1). The Court of Appeals for the Federal Circuit has held that “[t]he dismissal
`
`of an action without prejudice leaves the parties as though the action had never been
`
`brought.” Graves v. Principi, 294 F.3d 1350, 1356 (Fed. Cir. 2002). On this
`
`principle, the Board has repeatedly held that dismissal of a civil action without
`
`prejudice does not bar inter partes review under 35 U.S.C. § 315(a). See, e.g.,
`
`Nautique Boat Co., Inc. v. Malibu Boats, LLC, IPR2014-01045, Paper 13 at 9-11
`
`(PTAB Nov. 26, 2014) (holding that petitioner’s declaratory judgment action for
`
`invalidity in the United States District Court for the Middle District of Florida, which
`
`was dismissed without prejudice, did not bar inter partes review); Invue Security
`
`Prods. v. Merchandising Techs., Inc., IPR2013-00122, Paper 17 at 8-10 (PTAB, Jun.
`
`27, 2013) (holding that dismissal without prejudice of petitioner’s declaratory
`
`2
`
`
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,622,441
`
`judgment action in the United States District Court for the Western District of North
`
`Carolina does not trigger the statutory bar prohibiting inter partes review); Clio
`
`USA, Inc. v. The Procter and Gamble Co., IPR2013-00438, Paper 9 at 6-9 (PTAB,
`
`Jan. 9, 2014) (holding that where petitioner’s action for declaratory judgment was
`
`dismissed without prejudice, it is treated as if it never existed, and does not bar inter
`
`partes review under 35 U.S.C. § 315(a)).
`
`The ‘441 Patent has not been the subject of IPR or other post-grant
`
`proceedings.
`
`C. LEAD AND BACK-UP COUNSEL
`Petitioner provides the following designation of counsel.
`
`LEAD COUNSEL:
`
`BACKUP COUNSEL:
`
`Noam J. Kritzer
` Email: patent@bakoskritzer.com
` Email: nkritzer@bakoskritzer.com
`Bakos & Kritzer
`147 Columbia Turnpike
`Suite 102
`Florham Park, New Jersey 07932
`Tel: 908-273-0770
`Fax: 973-520-8260
`
`D.
`
`SERVICE INFORMATION
`
`Ryan S. McPhee
` Email: patent@bakoskritzer.com
` Email: rmcphee@bakoskritzer.com
`Bakos & Kritzer
`945 Fourth Avenue
`Suite 411
`San Diego, California 92101
`Tel: 619-377-0770
`Fax: 973-520-8260
`
`Please address all correspondence to the lead counsel at the address provided
`
`in section I.C of this Petition. Petitioner also consents to electronic service by email
`
`3
`
`at patent@bakoskritzer.com.
`
`
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,622,441
`
`PAYMENT OF FEES – 37 C.F.R. § 42.103
`
`II.
`
`Petitioner submits herewith the fees set forth in 37 C.F.R. § 42.15(a) for this
`
`Petition for Inter Partes Review.
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§ 42.104
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`Petitioner certifies that the ‘441 Patent is available for IPR and that Petitioner
`
`is not barred or estopped from requesting IPR.
`
`B.
`
`Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested
`Petitioner requests inter partes review of claims 1, 2, 5, 11, 12, 15, and 16 of
`
`the ‘441 Patent on the grounds set forth in the table below and requests that each of
`
`the claims be found unpatentable. An explanation of how claims 1, 2, 5, 11, 12, 15,
`
`and 16 are unpatentable under the statutory grounds identified below, including the
`
`identification of where each element is found in the prior art references, and the
`
`relevance of each of the prior art references, is provided in the form of detailed claim
`
`charts. Additional explanation and support for each ground of rejection is set forth
`
`in the Declaration of Youjiang Wang, Ph.D., P.E. (Ex. 1019).
`
`4
`
`
`
`
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,622,441
`
`Ground
`
`Basis for Unpatentability
`
`‘441 Patent
`Claims
`Ground I Claims 1, 2, and 5 Anticipated under 35 U.S.C. § 102 by
`Zaltzman
`Obvious under 35 U.S.C. § 103 in view of
`Ground II Claims 11, 12, 15,
`Zaltzman
`and 16
`Ground III Claims 1, 2, and 5 Anticipated under 35 U.S.C. § 102 by
`Lijovich
`Obvious under 35 U.S.C. § 103 in view of
`Ground IV Claims 11, 12, 15,
`Lijovich
`and 16
`Ground V Claims 1, 2, and 5 Anticipated under 35 U.S.C. § 102 by Nedry
`Ground VI Claims 11, 12, 15,
`Obvious under 35 U.S.C. § 103 in view of
`and 16
`Nedry and Phelps
`
`
`Effective Filing Date
`
`1.
`The ‘441 Patent issued on January 7, 2014 from U.S. Application Serial No.
`
`14/018,542 filed on September 5, 2013 (“the ‘542 Application”), purports to be a
`
`continuation of U.S. Application Ser. No. 13/626,057 (“the ‘057 Application”) filed
`
`September 25, 2012, and claims priority to U.S. Provisional Application Ser. No.
`
`61/846,270 filed on July 15, 2013 (“the ‘270 Provisional”). To facilitate
`
`consideration, the relationship between the three applications is graphically
`
`illustrated below. Copies of the USPTO electronic file wrappers for the foregoing
`
`applications are being submitted as Ex. 1002, Ex. 1004, and Ex. 003.
`
`While the ‘542 Application is characterized as a continuation of the ‘057
`
`Application, the ‘542 Application was filed with a set of claims which are not
`
`supported by the originally-filed disclosure of the ‘057 Application.
`
`5
`
`
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,622,441
`
`a.
`
`The ‘057 Application Does not Disclose “an access slot disposed
`therebetween” or “upper and lower tabs”
`
`Independent claim 1 as filed of the ‘542 Application requires that “each of the
`
`posts include a first arm and a second arm and an access slot disposed therebetween”
`
`and dependent claim 5 as filed of the ‘542 Application requires that “each of the first
`
`arm and the second arm include upper and lower tabs for holding the links on the
`
`corresponding first arm and second arm.” Ex. 1002 at 188 (emphasis added). The
`
`‘057 Application discloses “an access groove 34A, 34B” (Ex. 1004 at ¶ 0021) and
`
`“pins 21 each include arms 19 disposed on either side of an access groove 25.” Ex.
`
`1004 at ¶ 0031. As shown in Figs. 6, 10, 11 and 12 of the ‘057 Application, the ‘057
`
`Application does not provide support for posts with an access slot disposed
`
`therebetween or upper and lower tabs.
`
`However, the ‘270 Provisional Application discloses that “[e]ach of the pins
`
`28A, 28B includes a first arm 32a-b and second arm 34a-b supported on a base 36.
`
`The arms 32a-b, 34a-b defines an access slot 38 that extends across both of the posts
`
`28A, 28B.” Ex. 1003 at ¶ 0017. Further, the ‘270 Provisional Application discloses
`
`that “[e]ach of the first and second arms 32a-b, 34a-b include upper and lower tabs
`
`42 that maintain a linked article within a center section 44.” Ex. 1003 at ¶ 0017.
`
`The ‘270 Provisional Application provides support for a post with a first arm and a
`
`second arm that include upper and lower tabs on the first arm and second arm as
`
`6
`
`
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,622,441
`
`required by claim 1. As such, the earliest priority date of independent claim 1 of the
`
`‘441 Patent is the filing of the ‘270 Provisional Application on July 15, 2013.
`
`b.
`
`The ‘057 Application Does Not Disclose “an access slot defined
`between a first arm and a second arm”
`
`Dependent claim 12 of the ‘542 Application requires “at least two posts
`
`spaced part from each other in a first direction, wherein each of the posts include an
`
`access slot defined between a first arm and a second arm.” Ex. 1002 at 190
`
`(emphasis added). The term “access slot” is not found in the ‘057 Application. The
`
`‘057 Application only makes references to an access grove. Ex. 1004 at ¶¶ 0021 and
`
`0031. As shown in the chart below, only the ‘270 Provisional Application provides
`
`support for posts that include an access slot defined between a first arm and a second
`
`arm as required by dependent claim 12 as filed of the ‘542 Application.
`
`‘057 Application
`Each of the access grooves 34A, 34B
`extend entirely through the pins 28A,
`28B including through the flanges 30A,
`30B and the bases 32A, 32B and the
`bridge 36. Ex. 1004 ¶ 0021.
`
`‘270 Provisional Application
`The arms 32a-b, 34a-b defines an
`access slot 38 that extends across both
`of the posts 28A, 28B. Ex. 1003 ¶
`0017.
`
`
`
`
`
`7
`
`
`The pins 21 each include arms 19
`disposed on either side of an access
`groove 25. Ex. 1004 ¶ 31.
`
`
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,622,441
`
`
`‘057 Application
`
`‘270 Provisional Application
`
`
`
`
`As such, the earliest priority date of independent claim 11 of the ‘441 Patent
`
`is the filing of the ‘270 Provisional Application on July 15, 2013.
`
`c.
`
`No Incorporation-by-Reference in the ‘057 Application
`
`The ‘057 Application fails to any incorporation-by reference language.
`
`Accordingly, the disclosure of each of these applications is limited to the written
`
`description specifically contained in each of them. Pursuant to 37 C.F.R. § 1.57(a),
`
`“an incorporation by reference must be set forth in the specification and must: (1)
`
`[e]xpress a clear intent to incorporate by reference by using the root words
`
`‘incorporat(e)’ and ‘reference’ (e.g., ‘incorporate by reference’); and (2) [c]learly
`
`identify the referenced patent, application, or publication.” (emphasis added) A
`
`priority claim to an earlier field application without the language required by 37
`
`C.F.R. § 1.57(b) is not sufficient. In re de Seversky, 474 F.2d 671 (CCPA 1973).
`
`The words “incorporate€” and “reference” are not used by the ‘057 Application. As
`
`such, the ‘057 Application cannot rely on the disclosure of any prior application to
`
`provide support for any of the claim features of the ‘441 Patent discussed above.
`8
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`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,622,441
`
`d.
`
`Designation as Continuation Does Not Save the ‘441 Patent
`
`The ‘542 Application was filed as a “continuation” of the ‘057 Application.
`
`This designation does not affect the conclusions reached above, because the ‘542
`
`Application was filed with claims that contained subject matter which is not
`
`supported by the disclosure of the ‘057 Application. When a “continuation”
`
`application is filed with a claim reciting new matter not disclosed in its parent
`
`application, the continuation application does not receive the benefit of the parent’s
`
`earlier filing date. See, e.g., Lockwood, 107 F.3d at 1571.
`
`e.
`
`Examination Under Pre-AIA Law is Non-Binding
`
`The file history of the ‘542 Application indicates that it was examined under
`
`the Pre-AIA Patent Law. This occurred as a result of the Patent Owner’s failure to
`
`properly designate the ‘542 Application as AIA for containing at least one claim
`
`having an effective filing date on or after March 16, 2013 in a Statement Under 37
`
`C.F.R. § 1.55 or 1.78 for AIA Transition Applications. Accordingly, it is
`
`respectfully requested that the Board properly reexamined the ‘441 Patent under the
`
`AIA First-Inventor to File provisions.
`
`2. Claim Construction Under 37 C.F.R. § 42.104(b)(3)
`Pursuant to 37 C.F.R. § 42.100(b), and solely for the purpose of this review,
`
`Petitioner construes the claim language such that the claims are given their broadest
`
`reasonable construction in light of the specification of the ‘441 Patent. For terms
`9
`
`
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,622,441
`
`not specifically listed and construed below, Petitioner construes them for purposes
`
`of this review in accordance with their plain and ordinary meaning under the required
`
`broadest reasonable construction.
`
`Petitioner reserves the right to challenge the validity of claims 1, 2, 5, 11, 12,
`
`15, and 16 as failing to satisfy the requirements of 35 U.S.C. § 112, and Petitioner’s
`
`proposed claim constructions should not be construed as a waiver to challenge the
`
`claims on such grounds. For the purpose of discussing invalidity of the challenged
`
`claims in view of prior art references, Petitioner will attempt to construe various
`
`ambiguous claim terms under the broadest reasonable interpretation standard.
`
`The Preamble of Claim 1
`
`a.
`The preamble of claim 1 (i.e., “[a] device for creating an item consisting of a
`
`series of links”) is not a claim limitation. The phrase “for creating an item consisting
`
`of a series of links” merely recites an intended use of the device, and does not
`
`constitute a limitation of claim 1. If a prior art reference discloses the structural
`
`limitations of claim 1, the prior art would read on claim 1. If the Board construes
`
`the preamble as a limitation, a prior art device need only be capable of performing
`
`the recited function. See, Bettcher Indus., Inc. v. Bunzl USA, Inc., 661 F.3d 629, 654
`
`(Fed. Cir. 2011) (“Where all structural elements of a claim exist in a prior art
`
`product, and that prior art product is capable of satisfying all functional or intended
`
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`Petition for Inter Partes Review of U.S. Patent No. 8,622,441
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`use limitations, the claimed invention is nothing more than an unpatentable new use
`
`for an old product.”) (citation omitted); see also MPEP 2114.
`
`“access slot”
`
`b.
`Claim 1 recites “wherein each of the posts include a first arm and a second
`
`arm and an access slot disposed therebetween.” Petitioner requests that the term
`
`“access slot” is construed as “an open space between the first arm and the second
`
`arm.”
`
`“upper and lower tabs”
`
`c.
`Claim 1 recites “wherein each of the first arm and second arm include upper
`
`and lower tabs for holding the links on the corresponding first arm and second arm.”
`
`Petitioner submits that the broadest reasonable interpretation for “upper and lower
`
`tabs” is “upper and lower portions extending outward.”
`
`d.
`
`“for holding the links on the corresponding first arm and second
`arm”
`
`Claim 1 recites “wherein each of the first arm and second arm include upper
`
`and lower tabs for holding the links on the corresponding first arm and second arm.”
`
`The phrase “for holding the links on the corresponding first arm and second arm”
`
`merely recites an intended use of the device, and does not constitute a limitation of
`
`claim 1. If a prior art reference discloses the structural limitation of the upper and
`
`lower tabs, the prior art would read on this limitation of claim 1. If the Board
`
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`Petition for Inter Partes Review of U.S. Patent No. 8,622,441
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`construes this phrase as a limitation, a prior art device need only be capable of
`
`performing the recited function. See, Bettcher 661 F.3d at 654; see also MPEP 2114.
`
`The Preamble of Claim 11
`
`e.
`The preamble of claim 11 (i.e., “[a] kit for creating an item consisting of a
`
`series of links”) is not a claim limitation. The phrase “for creating an item consisting
`
`of a series of links” merely recites an intended use of the kit, and does not constitute
`
`a limitation of claim 11. If a prior art reference discloses the structural limitations
`
`of claim 11, the prior art would read on claim 11. If the Board construes the
`
`preamble as a limitation, a prior art device need only be capable of performing the
`
`recited function. See, Bettcher 661 F.3d at 654; see also MPEP 2114.
`
`“for manipulating elastic members relative to each other”
`
`f.
`Claim 15 recites “a hook for manipulating elastic members relative to each
`
`other.” The phrase “for manipulating elastic members relative to each other” merely
`
`recites an intended use of the hook, and does not constitute a limitation of claim 15.
`
`If a prior art reference discloses the structural limitation of claim 15, the prior art
`
`would read on claim 15. If the Board construes this phrase as a limitation, a prior
`
`art device need only be capable of performing the recited function. See, Bettcher
`
`661 F.3d at 654; see also MPEP 2114.
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`12
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`Petition for Inter Partes Review of U.S. Patent No. 8,622,441
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`IV. SUMMARY OF THE ‘441 PATENT
`A. BRIEF DESCRIPTION
`1.
`The ‘441 Patent Specification
`The ‘441 Patent is directed to a device for creating an item formed by a series
`
`of Brunnian links. The ‘441 Patent discloses that “[a] Brunnian link is a link formed
`
`from a closed loop doubled over itself to capture another closed loop to form a
`
`chain.” Ex. 1001 at 1:29-31. With
`
`reference to Fig. 1, a kit 10 comprises
`
`template 12, clip 16, hook 14, and a
`
`number of elastic members 18 to form
`
`links for a wearable item. Ex. 1001 at 1:66 – 2:5, Fig. 1.
`
`With reference to Figs. 4-6, template 12 comprises a base 36 supporting two
`
`posts 28A and 28B, each of which comprises a first arm 32a-b and a second arm
`
`34a-b. Each of the arms 32a-b and 34a-b comprises upper and lower tabs 42.
`
`
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`13
`
`Ex. 1001 at Figs. 4-6.
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`Petition for Inter Partes Review of U.S. Patent No. 8,622,441
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`
`B.
`
`SUMMARY OF THE PROSECUTION HISTORY OF THE ‘441
`PATENT
`
`The ‘441 Patent issued from the ‘542 Application, which was filed on
`
`September 5, 2013. The Patent Office issued a communication on November 14,
`
`2013 stating that the ‘542 Application was being identified as a pre-AIA application
`
`and would be examined under pre-AIA law. Ex. 1002 at 66. An Examiner Interview
`
`was held on November 14, 2013, during which the Patent Examiner and applicant
`
`discussed Newcomb U.S. Patent No. 222,937 and Stewart U.S. Patent No. 289,578.
`
`Ex. 1002 at 38. A Notice of Allowance was issued on November 27, 2013 and
`
`contained an Examiner’s Amendment that, among other amendments, added the
`
`following phrase to claim 1: “wherein each of the first arm and the second arm
`
`include upper and lower tabs for holding the links on the corresponding first arm and
`
`second arm.” Ex. 1002 at 34. The ‘441 Patent issued on January 7, 2014.
`
`V. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ‘441 PATENT IS UNPATENTABLE
`A. GROUND I: CLAIMS 1, 2, AND 5 ARE ANTICIPATED BY
`ZALTZMAN
`
`Zaltzman (Ex. 1012), which was not cited during the prosecution of the ‘441
`
`Patent, issued on May 17, 1997, and discloses a hand-loom kit. With reference to
`
`Figs. 1, 1A, and 3 (reproduced below), the hand-loom kit comprises modules
`
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`Petition for Inter Partes Review of U.S. Patent No. 8,622,441
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`including a plurality of pins 5. Claims 1-2 and 5 are anticipated and therefore
`
`rendered unpatentable by Zaltzman under § 102(b).
`
`Claim 1 is Anticipated by Zaltzman
`
`1.
`As shown in the chart below, Zaltzman discloses every element of Claim 1.
`
`Claim 1
`A device for creating an
`item consisting of a series
`of links, the device
`comprising:
`at least two posts spaced
`part from each other in a
`first direction,
`
`Zaltzman
`Zaltzman discloses a hand-loom kit for woven
`products, which inherently consists of a series of
`links. See, 1:4-7; 1:37-39; 5:8.
`
`The hand-loom kit in
`Zaltzman includes at least
`two modules A and C
`(i.e., two posts) spaced
`apart from each other in a
`first direction. See e.g.,
`2:37-39; Fig. 3
`(reproduced herein).
`
`
`
`
`The modules in
`Zaltzman include a
`plurality of pins 5
`(i.e., arms)
`longitudinally
`spaced a distance x
`apart, which
`includes an access
`slot therebetween.
`See e.g., 2:2-4; 2:52-54; Figs. 1 (reproduced below).
`
`As shown in Fig. 1A
`(reproduced herein), the pins
`5 include a rounded top (i.e.,
`an upper tab) and a flanged
`base (i.e., a lower tab), which
`15
`
`wherein each of the posts
`include a first arm and a
`second arm and an access
`slot disposed
`therebetween,
`
`wherein each of the first
`arm and the second arm
`include upper and lower
`tabs for holding the links
`
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`Petition for Inter Partes Review of U.S. Patent No. 8,622,441
`
`
`Claim 1
`on the corresponding first
`arm and second arm.
`
`Zaltzman
`holds a link on corresponding
`pins 5. See., e.g., 2:13-20,
`2:25-27; Fig. 1A and Fig. 8.
`
`Claim 2 is Anticipated by Zaltzman
`
`2.
`As shown in the chart below, Zaltzman discloses every element of Claim 2.
`
`Claim 2
`The device as recited in
`claim 1, including a base
`supporting the at least
`two posts.
`
`Zaltzman
`The hand-loom in Zaltzman
`includes a module B (i.e., a
`base) for supporting modules
`A and C. See, e.g., Fig. 3.
`
`Claim 5 is Anticipated by Zaltzman
`
`3.
`As shown in the chart below, Zaltzman discloses every element of claim 5.
`
`
`
`Claim 5
`The device as recited in
`claim 1, wherein the
`tabs
`are
`spaced
`horizontally apart from
`each other.
`
`Zaltzman
`in Fig. 1
`shown
`As
`(reproduced herein)
`the
`pins 5, including rounded
`tops and flanged bases are
`spaced horizontally apart
`from each other.
`
`
`
`16
`
`
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 8,622,441
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`B. GROUND II: CLAIMS 11, 12, 15, AND 16 ARE OBVIOUS IN
`VIEW OF ZALTZMAN
`
`Claim 11 is Obvious Over Zaltzman in View of Phelps
`
`1.
`The following chart contains element-by-element comparisons of claim 11
`
`and Zaltzman and Phelps:
`
`Claim 11
`A kit for creating an item
`consisting of a series of
`links, the kit comprising:
`a template including at
`least two posts spaced
`part from each other in a
`first direction,
`wherein each of the posts
`include an access slot
`defined between a first
`arm and a second arm;
`and
`at least one clip including
`inward facing ends
`disposed on each side of
`an opening for securing
`ends of the series of links
`together.
`
`Zaltzman in View of Phelps
`Zaltzman disclos